243 F. 911 | 7th Cir. | 1917
(after stating the facts as above). Appellant’s attack upon the validity of the product patent may be divided into the following heads: (A) Patentee’s product was merely the application of practical mechanics and did not involve invention. (B) The steps applied were taken from the prior art. (C) Patentee’s product is the result of actual aggregation of a number of old steps.
But it is asserted that these claims of strength and increased incandescence were imaginary, mere paper claims, and are not in fact existing, and the results so obtained were self-evident. The evidence as to the extent of the patentee’s contribution to the art, while conflicting, supports appellee’s contention in this respect. The fact that the completed product, though more expensive than the old form of mantle, is now extensively used, and the further fact that appellant has seen fit to manufacture the product in large quantities, are convincing, if not conclusive. In view of the appellant’s use of the patented invention, the claim is poorly asserted that the improvement contributed no advance in the art. Gandy v. Main Belting Co., 143 U. S. 587, 596, 12 Sup. Ct. 598, 36 L. Ed. 272; Western Electric Co. v. La Rue, 139 U. S. 601, 608, 11 Sup. Ct. 670, 35 L. Ed. 294.
Nor was the solution of the problem confronting Kaufmarm a sim
Was there infringement? In view of the testimony of the appellant's expert, this subject is hardly debatable. Its witness admitted infringement. While such an admission is not binding upon the litigant, yet this court agrees with the witness that there was unquestionably infringement. It follows, therefore, that product j>atent, No. 940,639, is valid and was infringed by appellant.
“A claim similar to the claims now in this ease was submitted in application No. 283,743, filed October 21, 1905, which has matured into patent No. 910,639, November 16, 1009. Said claim was rejected as involving new matter. Applicant amended the claim, but traversed the rejection o£ the claim as new matter, and later of his own motion canceled the amended claim, with the expressed reservation that claims to such subject-matter might be made in a future application. The office docs not hold that applicant acquiesced in the rejection of claim 8 of the former application as new matter, as he expressly did not so acquiesce, and in fact no action was taken by the oflice on the amended claim. Moreover, on page 1, line 23, applicant apparently means to say that the application is a division of former application 283,743 of October 21, 1905.”
In the light of these facts, appellant’s contentions are not well taken. Its claim that the process patent covers the same invention as the article patents is unsupported by the facts and contrary to the ruling of the Patent Office.
The further objection to the validity of the process patent, that the product can be produced only by this process, and, if sustained, the process patent would unlawfully extend appellee’s product monopoly, fails, because in fact the product patent can be made in other ways. Century Electric Co. v. Westinghouse E. & Mfg. Co., 191 Fed. 350, 359, 112 C. C. A. 8; Leeds & Catlin v. Victor Talking Machine Co., 213 U. S. 301, 318, 29 Sup. Ct. 495, 53 L. Ed. 805.
Its second objection, while disputing its previous position is not supported by the record. Appellant says:
*916 “Kaufmann admits that the process in the process patent is not disclosed in the article patent, and consequently the process application could not be a divisional ease.”
Kaufmann’s process patent is disclosed in the original application, and is restricted to the claims covering the process found therein.
Noninfringement of Process Patent.
The other alleged differences in appellant’s process from the steps outlined in appellee’s claims hardly justify separate consideration. We conclude that process patent, No. 975,769, is valid, and claims 1 and 3 are infringed.
The decree is affirmed.